Case 2:12-cv-00340-CW Document 2 Filed 04/09/12 Page 1 of 10

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Scott R. Ryther (Bar No. 5540) Matthew D. Thayne (Bar No. 9424) Jared L. Cherry (Bar No. 11534) PHILLIPS RYTHER & WINCHESTER LLC 560 East 500 South, Suite 200 Salt Lake City, Utah 84102 Telephone: (801) 935-4935 Attorneys for Trackout Industries, LLC IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH, CENTRAL DIVISION TRACKOUT INDUSTRIES, LLC, an Arizona limited liability company, Plaintiff, v. PRO-TEC EQUIPMENT, INC., a Michigan corporation, Case No. 2:12-cv-00340-CW Defendant. COMPLAINT AND JURY DEMAND (Patent Infringement)

COMPLAINT FOR PATENT INFRINGEMENT

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Arizona. 2. Upon information and belief, Defendant PRO-TEC is a Michigan corporation with 1. Plaintiff Trackout Industries, LLC (Trackout or Plaintiff) hereby complains against defendant PRO-TEC Equipment, Inc. (PRO-TEC or Defendant), and for its causes of action alleges as follows: PARTIES Trackout is a limited liability company organized and operating under the laws of

the state of Arizona with its principal place of business at 811 West Warner Road in Tempe,

its company headquarters located at 1298 Lipsey Drive in Charlotte, Michigan. Page 1 of 10

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3.

JURISDICTION AND VENUE This is an action for infringement under the patent laws of the United States, 35

U.S.C. 271, et. seq, and this Court has jurisdiction over the subject matter of this dispute pursuant to 28 U.S.C. 1331 and 1338(a).

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Page 2 of 10 Patent and Trademark Office on April 19, 2005. The 006 Patent claims apparatus for removing track out from a moving vehicle. A copy of the 006 Patent is attached hereto as Exhibit A. 8. U.S. Patent No. 6,981,818 titled METHOD AND DEVICE FOR REDUCING 6. GENERAL ALLEGATIONS Trackout does business primarily in the construction industry. Trackout sells a 4. Defendant PRO-TEC is subject to personal jurisdiction in this judicial district because it conducts business in this judicial district, and because it has sold the products at issue in this dispute in this judicial district. 5. Venue is proper in this Court under 28 U.S.C. 1400(b) and 28 U.S.C. 1391(b)

because PRO-TEC conducts business in this Judicial District, and because at least some of the acts giving rise to this Complaint occurred in this judicial district.

product for controlling and minimizing the tracking out of dirt, mud, dust, and debris (track out) from construction sites and other similar locations. GRIZZLY. 7. U.S. Patent No. 6,881,006 titled DEVICE AND METHOD FOR REDUCING This product is sold under the name

CONSTRUCTION SITE TRACK OUT (the 006 Patent) was issued by the United States

CONSTRUCTION SITE TRACK OUT (the 818 Patent) was issued by the United States Patent and Trademark Office on January 3, 2006. The patent application from which the 818 Patent issued was filed as a continuation-in-part of the patent application from which the 006

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Patent was issued. The 818 Patent claims methods for removing track out from a vehicle. A copy of the 818 Patent is attached hereto as Exhibit B. 9. U.S. Patent No. 7,059,799 titled METHOD AND DEVICE FOR REDUCING

CONSTRUCTION SITE TRACK OUT (the 799 Patent) was issued by the United States

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Page 3 of 10 enforceable. 13. Trackout has expended considerable time, effort, and money in the development, Trademark Office on August 17, 2010. The patent application from which the 739 Patent issued claims priority to the patent application from which the 799 Patent was issued. The 739 Patent claims methods for removing track out from a vehicle. A copy of the 739 Patent is attached hereto as Exhibit D. 11. Trackout is the owner of the entire right, title, and interest in the 006 Patent, the Patent and Trademark Office on June 13, 2006. The patent application from which the 799 Patent issued was filed as a continuation of the patent application from which the 818 Patent was issued. The 799 Patent claims apparatus for removing track out from a moving vehicle. A copy of the 799 Patent is attached hereto as Exhibit C. 10. U.S. Patent No. 7,775,739 titled METHOD AND DEVICE FOR REDUCING

CONSTRUCTION TRACK OUT (the 739 Patent) was issued by the United States Patent and

818 Patent, the 799 Patent, and the 739 Patent (collectively, the Patents-in-Suit). 12. The Patents-in-Suit are each duly and legally issued and are each valid and

marketing, and sales of its GRIZZLY products protected under the Patents-in-Suit. 14. Upon information and belief, PRO-TEC has made, used, sold, and/or offered to

sell, continues to make, use, sell, and/or offer to sell, and/or has caused others to make, use, sell, and/or offer to sell track out structures designed to remove track out from a vehicle that infringe

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the Patents-in-Suit, including, but not limited to, the product shown in the photograph attached hereto as Exhibit E (the Infringing Products). 15. Upon information and belief, at least some of the Infringing Products are sold

under the name Rumble Grid.

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21. Trackout will suffer further irreparable injury, for which it has no adequate 19. The making, using, selling, offering to sell, or causing others to make, use, sell, and/or offer to sell the Infringing Products by PRO-TEC has been without authority or license from Trackout and in violation of Trackouts rights, thereby infringing (either literally or through the doctrine of equivalents) the 006 Patent. 20. PRO-TEC has caused and will continue to cause Trackout substantial damage and 17. 16. PRO-TECs Infringing Products compete directly with Trackouts products sold under Trackouts GRIZZLY trademark. FIRST CLAIM FOR RELIEF (Infringement of U.S. Patent No. 6,881,006) Trackout hereby incorporates the allegations in paragraphs 1 through 16 above as

though fully set forth herein. 18. Upon information and belief, PRO-TEC has infringed and continues to infringe,

either directly, or in a contributory or induced manner (35 U.S.C. 271(a), (b), or (c)), one or more claims of the 006 Patent in this District and elsewhere by making, using, offering to sell, selling, and/or importing the Infringing Products.

irreparable injury by infringing the 006 Patent.

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remedy at law, unless and until PRO-TEC is enjoined from infringing the 006 Patent. 22. Upon information and belief, by reason of PRO-TECs infringement of the 006

Patent, as alleged above, Trackout has lost sales of products sold under its GRIZZLY trademark, which it otherwise would have made. Page 4 of 10

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23.

PRO-TEC is liable to Trackout for the lost profits and/or reasonable royalty

attributable to infringement of the 006 Patent, and any additional profits attributable to such infringement in an amount to be determined at trial, together with prejudgment interest thereon. 24. Upon information and belief, PRO-TECs infringement of the 006 Patent was and

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irreparable injury by infringing the 818 Patent. selling, and/or importing the Infringing Products. 27. The making, using, selling, offering to sell, or causing others to make, use, sell, 25. is willful, intentional, and deliberate. Accordingly, this case is exceptional under 35 U.S.C. 285, and Trackout is entitled to recover treble damages and its reasonable attorneys fees, expenses, and costs incurred in this action. SECOND CLAIM FOR RELIEF (Infringement of U.S. Patent No. 6,981,818) Trackout hereby incorporates the allegations in paragraphs 1 through 24 above as

though fully set forth herein. 26. Upon information and belief, PRO-TEC has infringed and continues to infringe,

either directly, or in a contributory or induced manner (35 U.S.C. 271(a), (b), or (c)), one or more claims of the 818 Patent in this District and elsewhere by making, using, offering to sell,

and/or offer to sell the Infringing Products by PRO-TEC has been without authority or license from Trackout and in violation of Trackouts rights, thereby infringing (either literally or through the doctrine of equivalents) the 818 Patent. 28. PRO-TEC has caused and will continue to cause Trackout substantial damage and

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Page 5 of 10 29. Trackout will suffer further irreparable injury, for which it has no adequate remedy at law, unless and until PRO-TEC is enjoined from infringing the 818 Patent.

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30.

Upon information and belief, by reason of PRO-TECs infringement of the 818

Patent, as alleged above, Trackout has lost sales of products sold under its GRIZZLY trademark, which it otherwise would have made. 31. PRO-TEC is liable to Trackout for the lost profits and/or reasonable royalty

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from Trackout and in violation of Trackouts rights, thereby infringing (either literally or through 34. Upon information and belief, PRO-TEC has infringed and continues to infringe, either directly, or in a contributory or induced manner (35 U.S.C. 271(a), (b), or (c)), one or more claims of the 799 Patent in this District and elsewhere by making, using, offering to sell, selling, and/or importing the Infringing Products. 35. The making, using, selling, offering to sell, or causing others to make, use, sell, 33. THIRD CLAIM FOR RELIEF (Infringement of U.S. Patent No. 7,059,799) Trackout hereby incorporates the allegations in paragraphs 1 through 32 above as attributable to infringement of the 818 Patent, and any additional profits attributable to such infringement in an amount to be determined at trial, together with prejudgment interest thereon. 32. Upon information and belief, PRO-TECs infringement of the 818 Patent was and

is willful, intentional, and deliberate. Accordingly, this case is exceptional under 35 U.S.C. 285, and Trackout is entitled to recover treble damages and its reasonable attorneys fees, expenses, and costs incurred in this action.

though fully set forth herein.

and/or offer to sell the Infringing Products by PRO-TEC has been without authority or license

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Page 6 of 10 the doctrine of equivalents) the 799 Patent. 36. PRO-TEC has caused and will continue to cause Trackout substantial damage and

irreparable injury by infringing the 799 Patent.

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37.

Trackout will suffer further irreparable injury, for which it has no adequate

remedy at law, unless and until PRO-TEC is enjoined from infringing the 799 Patent. 38. Upon information and belief, by reason of PRO-TECs infringement of the 799

Patent, as alleged above, Trackout has lost sales of products sold under its GRIZZLY

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43. The making, using, selling, offering to sell, or causing others to make, use, sell, 41. Trackout hereby incorporates the allegations in paragraphs 1 through 40 above as though fully set forth herein. 42. Upon information and belief, PRO-TEC has infringed and continues to infringe, 285, and Trackout is entitled to recover treble damages and its reasonable attorneys fees, expenses, and costs incurred in this action. FOURTH CLAIM FOR RELIEF (Infringement of U.S. Patent No. 7,775,739) trademark, which it otherwise would have made. 39. PRO-TEC is liable to Trackout for the lost profits and/or reasonable royalty

attributable to infringement of the 799 Patent, and any additional profits attributable to such infringement in an amount to be determined at trial, together with prejudgment interest thereon. 40. Upon information and belief, PRO-TECs infringement of the 799 Patent was and

is willful, intentional, and deliberate. Accordingly, this case is exceptional under 35 U.S.C.

either directly, or in a contributory or induced manner (35 U.S.C. 271(a), (b), or (c)), one or more claims of the 739 Patent in this District and elsewhere by making, using, offering to sell, selling, and/or importing the Infringing Products.

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Page 7 of 10 and/or offer to sell the Infringing Products by PRO-TEC has been without authority or license from Trackout and in violation of Trackouts rights, thereby infringing (either literally or through the doctrine of equivalents) the 739 Patent.

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44.

PRO-TEC has caused and will continue to cause Trackout substantial damage and

irreparable injury by infringing the 739 Patent. 45. Trackout will suffer further irreparable injury, for which it has no adequate

remedy at law, unless and until PRO-TEC is enjoined from infringing the 739 Patent.

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Page 8 of 10 A. B. C. D. E. Enter an order that PRO-TEC has infringed the 006 Patent; Enter an order that PRO-TEC has infringed the 818 Patent; Enter an order that PRO-TEC has infringed the 799 Patent; Enter an order that PRO-TEC has infringed the 739 Patent; Enter judgment in favor of Trackout and against PRO-TEC for damages for patent infringement pursuant to 35 U.S.C. 284 in an amount to be 48. Upon information and belief, PRO-TECs infringement of the 739 Patent was and is willful, intentional, and deliberate. Accordingly, this case is exceptional under 35 U.S.C. 285, and Trackout is entitled to recover treble damages and its reasonable attorneys fees, expenses, and costs incurred in this action. PRAYER FOR RELIEF WHEREFORE, Trackout respectfully requests that this Court enter judgment and relief against PRO-TEC as follows: 46. Upon information and belief, by reason of PRO-TECs infringement of the 739 Patent, as alleged above, Trackout has lost sales of products sold under its GRIZZLY trademark, which it otherwise would have made. 47. PRO-TEC is liable to Trackout for the lost profits and/or reasonable royalty

attributable to infringement of the 739 Patent, and any additional profits attributable to such infringement in an amount to be determined at trial, together with prejudgment interest thereon.

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F.

determined at trial, but in no event less than a reasonable royalty for infringement of the 006 Patent; Enter judgment in favor of Trackout and against PRO-TEC for damages for patent infringement pursuant to 35 U.S.C. 284 in an amount to be

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Page 9 of 10 J. participation with them from infringing the Patents-in-Suit; Enter an order directing PRO-TEC to file with this Court and serve on counsel for Trackout, within 30 days after service of any injunction in this case (or within such extended period as the Court may direct), a report in writing under oath setting forth in detail the manner and form by which they have complied with the injunction requested in Paragraph I above; I. H. Enter judgment in favor of Trackout and against PRO-TEC for damages for patent infringement pursuant to 35 U.S.C. 284 in an amount to be determined at trial, but in no event less than a reasonable royalty for infringement of the 739 Patent; Enter an order preliminarily and permanently enjoining PRO-TEC and its officers, agents, directors, employees, parents, subsidiaries, affiliates, divisions, successors, assigns, and all persons in privity or active concert or G. determined at trial, but in no event less than a reasonable royalty for infringement of the 818 Patent; Enter judgment in favor of Trackout and against PRO-TEC for damages for patent infringement pursuant to 35 U.S.C. 284 in an amount to be determined at trial, but in no event less than a reasonable royalty for infringement of the 799 Patent;

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K.

Enter an order finding that this case is exceptional under 35 U.S.C. 285 and awarding Trackout its reasonable attorneys fees, expenses, and costs incurred in this action;

L.

For an order declaring that PRO-TECs infringement of the Patents-in-Suit was and is willful and awarding Trackout treble damages under 35 U.S.C. 284; and

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Page 10 of 10 By: /s/ Scott R. Ryther Attorneys for Plaintiff Trackout Industries, LLC Pursuant to the Federal Rules of Civil Procedure 38(b), Trackout demands a trial by jury for this action on all issues so triable. DATED this 9th day of March, 2012. DEMAND FOR JURY TRIAL M.

For an award of such other and further relief as this Court deems just and proper.